Game on: Intel joins netbook trademark suit, flames Psion

Intel has joined the legal fight over Psion's trademark on the term "netbook" with a strongly worded broadside filed in the US District Court in the Northern District of California. Intel purports to decisively refute Psion's claim to an exclusive right to the term, and demands an immediate judgment canceling the trademark and enjoining Psion from starting trouble again.

Psion trademarked the term in 1996, around the time they began developing the Psion 7, marketed as the netBook, to replace their Psion 5 palmtop. Both devices used ARM processors, ran Psion's EPOC operating system (the forerunner of Symbian), and were discussed extensively in a recent Ars feature published shortly before the fracas began. There, I pointed out that the netBook "was a netbook in a very real, modern sense, and Psion, appropriately enough, named it exactly that."

But while the netBook launched in 2000 to commercial succes at a $1300 price point, a slightly modified version, the netBook Pro, with an Intel XScale and Windows CE, was Psion's last such device.

Now, years later, with the trademarked "netbook" term in wide use to describe products from 38 different vendors (none of them Psion), what's left of Psion has decided to make trouble about the name. Psion convinced Google to ban the term from adsense ads, and it filed a large number of ceast and desist orders against a great many companies threatening more aggressive action if competing firms didn't stop using the term. A grassroots organization emerged with the intention of fighting the motion, but Dell preempted them by filing suit against Psion.

Intel is heavily and directly involved in origins of the fight, but until now the company had refrained even from commenting on it. Santa Clara was directly, immediately responsible for the reintroduction of the term, which it announced as the name of the new class of devices at the time it unveiled Menlow in June. Intel owns the domain netbook.com and links it to its own Atom marketing site, and the chipmaker's involvement has now brought this conflict to a boil.

The 13-page filing, which is titled "Complaint for Injuctive Relief, Declaratory Judgement, and Cancellation of Trademark from Federal Register" is quite aggressive. The first paragraph reads:

"This action arises from the allegations recently launched by [Psion] that it has the exclusive right to use the term "netbook." It does not. The consuming public has already adopted "netbook" as a generic term for a category of notebook computers that are small, inexpensive, and contain less processing power, making them optimal for connecting to the internet (or "net"). It is well established that "netbook" does not operate to identify a single source, or brand, of any such computer; netbooks are simply extensions of the notebook category, smaller computers purpose-built for mobile internet access. Psion's allegations therefore fail. Moreover, Psion's (currently) existing trademark registration for the term Netbook cannot resuscitate its alleged rights in a generic term. Accordingly, the court should cancel Psion's trademark registration, declare that Intel's use of "Netbook" is lawful, and enjoin Psion from asserting rights in the netbook term."

Aside from its similarities to a flame war with lawyers, the filing contains some interesting arguments. Intel's legal team points out, correctly, that the term has become highly generic, with vendors, press, and consumers using it to describe devices in at least 38 brands, using many different processors from Intel, VIA, and ARM vendors. They point out correctly that Psion's Netbook trademark never saw significant use in the USA, and has been idle for some time.

Intel raises the same fraud allegation that Dell did in its filing. On November 17, 2006, Psion filed a trademark registry extension saying it had "used the [term Netbook] in commerce for five consecutive years after the date of registration or the date of publication." Since the netBook line died out shortly after the trademark was granted in 2000, Intel asserts that this extension filing was fraudulent and illegal, and "based on material false misstatements." Because of Psion's alleged malfeasance, Santa Clara demands not only cancellation of the trademark and reaffirmation of its right to use the term, but also attorney fees and other "costs and disbursements."

It's possible that Intel will squash Psion like a bug, or alternately, they may find that the situation is somewhat more complicated. Intel's lawyers hammer home very strongly the fact that "netbook" has been broadly genericized, but they softpedal on the reason this happened. Of course, that reason was large-scale action by Intel to promote the term, beginning in 2008 and continuing to this day. If a court were to find that Intel began using the term for commercial purposes well before the genericization, and if indeed the genericization was a result of Intel's actions, it seems likely that this would hurt Intel's case.

With the launch of this new suit, Intel is now involved in at least two battles to protect its version of the netbook narrative; the CPU giant has been exerting effort to discredit NVIDIA's Ion platform, Ars reported on Wednesday. Intel, whose revenues are not as robust as they have been, is eager to protect its netbook cash cow, which is expected to yield 30 million sweet, milky sales this year.

20 Reader Comments

Just because Psion hasn't had significant traction in the US (I know someone in the US that has/had a Psion NetBook) doesn't invalidate it. Just because Psion hasn't sold new whole machines with that name in several years doesn't invalidate it. Psion has still been selling replacement parts for their machines during that time: this constitutes a clear use of the trademark in commerce during that time, therefore invalidating Intel's (and Dell's, etc.) claims of not using it in commerce during that period. And, if Intel has been pushing for use of the term during that time before when everyone has bandied it around casually for a meaningful amount of time previously, especially towards getting it genericized, I think Intel may find themselves in a real pickle.

Well as Ars was talking about the Psion Netbook Pro as a new product in late 2005 (Jon Stokes posted about it) I think we can completely wipe out the "not used the trademark in the past 5 years" argument.

As as Psion presumably sold them into 2006, and has been selling support and peripherals for them up to this date, I think that wipes out the "bad faith" argument.

So that leaves the genericity, and as this article points out - Intel's use of the term before it became generic could do their case a lot of harm, indeed leaving Intel liable to be sued for illegal use of the mark and dilution (or whatever the correct legalese is). Additionally the term hasn't been generic for long, in legal terms - certainly under a year when Psion first filed publicly.

Never mind that in the UK the trademark term is 10 years, and thus Psion could enforce that trademark in the UK and presumably the entire EU because of it.

The best outcome would be that other companies can't use it in their brand names or marketing, but blogs and normal people can.

The fact the consumers are using the term generically (whether they are doing so because of the actions of Intel or not) seems irrelevant that a competing business does so. If Puff's decided to market "Puff's Kleenxes" based on the idea that customers were calling them that anyway, Kimberly-Clark's lawyers would be all over them in a heartbeat. And they'd win.

If netbook is generic, it doesn't matter that Intel made it generic by heavily promoting it as such. In other words, genericness is about how the word is used in the language and whether people think of it as source-identifying or not.

So Intel would still win. Although it might get slapped around for its role in genericizing the word, and would probably anyway lose on the fraud claim.

Also, the difference between Kleenex and netbook may be that there may not be a suitable alternative generic word to describe the category of things described by "netbook", whereas for Kleenex, the reason why it still has TM protection is that there are other words like "tissue" that are used to describe a Kleenex. And, also, Kleenex may be about to show customer surveys that show that while people use the word Kleenex loosely, they generally do understand that the word Kleenex does refer to tissues produced by whatever company produces Kleenexes.

I hate to say it but I think Dell and Intel are in the wrong on this one, not Psion. Honestly the best thing at this point is for manufacturers to simply market them as mini_notes or something along those lines. The general public can still call them netbooks when discussing the devices.

"This slugfest is completely unimportant, but should be fun to watch."

A perfect summary.

I don't think that there is a clear answer to who should prevail under US trademark law, so it will be interesting to watch how the court rules.

Assuming it gets that far, of course. Psion would have to be nuts to fight Intel all the way on this, given their relative financial strengths. Do you really want to take on that sort of financial risk in this economic climate? I'd sell the trademark to Intel for whatever cash I could get and be done with it.

Psion has still been selling replacement parts for their machines during that time: this constitutes a clear use of the trademark in commerce during that time, therefore invalidating Intel's (and Dell's, etc.) claims of not using it in commerce during that period.

You seem really quite sure about that, only Psion's mark is just for "laptop computers". Apple's mark for iBook on the other hand covers "computers, computer hardware, computer peripherals and users manuals sold therewith". See the problem with your theory? Oh and then there's the whole Bose vs Hexawave precedent issue to think about.

Well as Ars was talking about the Psion Netbook Pro as a new product in late 2005 (Jon Stokes posted about it) I think we can completely wipe out the "not used the trademark in the past 5 years" argument.

The pro appeared just before the netbook was dropped and would probably cover the 3 year 'prima facie' abandonment clauses but the instant you permanently discontinue use the trademark essentially self destructs. Furthermore Psion made the mistake of using 'netBook' rather than 'netBook Pro' paraphenalia in their 2006 sworn statement which opens them up to the fraud claim too.

quote:

So that leaves the genericity, and as this article points out - Intel's use of the term before it became generic could do their case a lot of harm, indeed leaving Intel liable to be sued for illegal use of the mark and dilution (or whatever the correct legalese is).

That's a very good point, and it probably goes a long way towards explaining why Intel filed first.

quote:

Additionally the term hasn't been generic for long, in legal terms - certainly under a year when Psion first filed publicly.

If the term is broken as a source identifier then it doesn't matter how long it took to break; trademarks were invented before the time of Internet, or indeed even radio and TV. Now a product can run its entire lifecycle before its name is registered.

quote:

Never mind that in the UK the trademark term is 10 years, and thus Psion could enforce that trademark in the UK and presumably the entire EU because of it.

The term doesn't matter but it is a community mark which means it's valid throughout the EU until someone files a similar motion here.

quote:

The best outcome would be that other companies can't use it in their brand names or marketing, but blogs and normal people can.

No, that is probably the worst possible outcome. Consumer confusion will be rampant (tens if not hundreds of millions of people are clamouring for netbooks right now if the analysts are to be believed) and Psion will have effectively won lotto by being granted a monopoly over the term *after* it was popularised without their involvement. The precedent this would set would inflict yet more damage and all the other manufacturers would have well justified complaints of unfair competition.

What't the 'not being used in 5 years' argument? I'm pretty sure non-use for three years is considered abandonment. Was the Psion NetBook Pro last sold in 2005?

There's a press release in 2006 that could push the 3 year window out to mid this year but it doesn't necessarily matter because the second you permanently stop using a mark it's gone (the 3 year thing prevents companies from claiming they were still using the mark in that they have to actually deliver).

quote:

It would be interesting to see if continuing to sell parts for the device when the device itself is no longer on the market can be considered non-abandonment.

Not according to Bose vs Hexawave and not when you don't bother including parts in the trademark application (it covers only "laptop computers")

quote:

Should be an interesting case. Certainly with the fraud charges and asking for recovery of attorney's fees, Intel lawyers are putting a lot of pressure on Psion

It won't be the fees so much as the damages they've asked for and the surrounding PR. Probably the best thing they could do right now is drop the mark and release a netbook (you can bet that's what they're working on!).

Psion should file a UDRP against intel for the netbook.com domain name. They clearly registered it in bad faith and are using it commercially to sell competing products. A UDRP will be way cheaper, easier and be resolved much faster than a full blown trial. And if WIPO weighs in on Psion's side it will lend precedent for their cause.